Good point.

I would add a note of caution, as this sounds to only having an actual reduction to practice as opposed to a constructive reduction to practice.

Theses are very different requirements – do not sacrifice what you are entitled to just because of a lack of actual reduction to practice.

Very well said, and it is exactly what I did with my concept for wind turbine speed control. I built a working 12-ft diameter experimental prototype, and mounted it on a fairly short test tower to try it out for several weeks during the winter windy season here. The short tower allowed me to watch it at very close range, and take some very interesting HD videos and pictures of it in action.

I was very fortunate, in that a particularly nasty wind storm came through during the test period, gusting up past 55MPH, and veering around by sometimes 30 degrees or more in seconds. I could stand about 2 feet away from it at speed, and it was virtually silent, meaning that there was no significant stalling happening, and the rotor just went up to about 400RPM, and stayed there, no matter what the wind threw at it. I was very pleased, as you might imagine. I was able to look at the mechanism later and see what had been happening by observing the slight wear patterns on the *cams*, and it looked to be well within my somewhat stringent standards.

We called it a Turbine With Automatically Adjusting Pitch, with ocean current or river types of applications included in the claims. You won’t be able to find it unless a patent issues, as we requested non-publication when we filed the application, about a year and a half ago.

Happy New Year!
Stan~

You’ve raised the very interesting question of “What does it mean to be in full possession of an invention?”. As you may know, you can only claim what you are in full possession of when you file.

It seems to me that the real cost of broadening what you are in full possession of is the cost of running the experiments. Instead of worrying about the costs of a few extra claims, you might want to work with your patent agent/attorney to define the full breadth of what you want to claim and then specify the most cost effective experiments to run to demonstrate you are in possession of that desired full breadth.

Sometimes I find it difficult to even understand what my invention is actually capable of., because it is very new, and I am still trying to observe how it actually seems to behave in different conditions and exactly why. We might have been able to claim a bit more, be we were looking at the cost of including more claims, that might be somewhat obvious to the proverbial PHOSITA anyways.

Sometimes I find that the figures do more for me initially, but then I have to describe them accurately, and try not to leave any positive aspects of them not described, which is not easy to do at all. Since I am not formally trained, I just use the spec and figures to try to convey the invention adequately to a qualified practitioner, who can then hopefully have a good idea of what it might be possible to claim, and maybe even get away with it during examination.

I use a patent drafting software to get to that point, somewhat like Gene’s Invent+Patent System (TM)

Interesting follow up. For me, most of the thinking goes into the figure preparation. Once the figures are nailed down, the rest is already “written” in the sense that I know what I’m going to say. Actually putting the words to paper is a fairly mechanical exercise.

When you say the driver is claim strategy, I certainly would agree, but can you elaborate? In your opinion, what are the major drivers of claim strategy?

How do you fold in claim strategy? I assume you have some process for fallback positions, scope of coverage, types of claims, etc..

Do you find that as a visual thinker that your pictures are ‘worth a thousand words?’ Do you find that you employ your basic figures-spec-claims on any type of recursive basis (revisiting the figures after the claims have been drafted)? What is the breakdown on time per each section (generally)?

I find that driver tends to be the claims and claim strategy, but that the specification usually is drafted first*. The claims easily taking the most time.

*first is rather squishy, as usually that is the starting point, but there is almost a high jump back and forth factor after that initial spec draft, and the final spec almost never looks like the initial spec.

Thanks for the input on Patent Hunter. Very helpful.

Regarding my drafting technique, I start with an idea of what might be patentable and do an intensive patent and nonpatent literature search to refine the idea. I then draft the figures (being a visual thinker) followed by the spec. Formal claims come last with tweaks to the spec to make sure I’ve got full support for the claim language.

Just out of curiousity, do you usually start out with the claims first, and then derive the specification from that? I have heard of it done the other way round, but perhaps a little of both might be the right answer? It seems as if you might have to go back and fix the spec later to reflect the wording included in the claims that seem possible if you wrote the spec first, but to each their own I suppose.

S~

The late eighteen hundreds must have been a very interesting time, as I found scads of patents for wind turbines from that era, some of them going clear back to the early 1800′s. The American industrial revolution I guess, in many different fields. I even found President Lincoln’s patent for a way to assist large river boats when they got stuck, generally, that must have been from the 1850′s, and even the very first patent for running the seams of sails horizontally instead of the then normal pratice of running the seams vertically, just because it was easier. I think the sail patent came from an English applicant, but that was quite a while ago. It was probably from the late 1700′s, but I can’t recall exactly right now.

Stan~

S~

Yes I did try it out several years ago, and was pretty impressed with it. What it does it take your search terms and automatically loads the patents into your computer where you can open them in mere seconds instead of minutes. I like the PTO database because they use TIFF images which can be magnified greatly with excellent detail, as often it helps me to understand the drawings and the invention better.

While the bulk download is happening in the background, you can do virtually anything else you like meanwhile, like perhaps giving your attention to writing the claims and spec for instance, and being able to go back and and pull up the relevant patents from your own RAM as you discover what you need to look for. If you really like it, you might be able to help Michael by giving him some feedback on it, as I know he is always trying to improve his products as much as he can. By the time I had found out about it, I had already done the lion’s share of my search the hard way, so haven’t tried it lately.

A few years back, the PTO searches were sometimes slow, because they were getting huge bulk downloads from overseas, which I think Director Kappos fixed by setting limits on how many patents you could download in a given amount of time, according to a patent agent friend of mine, or they just upgraded theit IT infrastructure instead, but I am not sure which is really true.

Happy Holidays-
Stan~

The more you read and thoughtfully consider the better the product. I wish I could teach all inventors how to do a minimally acceptable patent search and then actually get them to read the patents (and not just look at the pictures).

The more you know… like that NBC commercial says.

If you haven’t already take a look at this article about sleighs…

http://www.ipwatchdog.com/2011/12/25/christmases-past-sleigh-patents-of-the1880s-1890s/id=21354/

I was really fascinated. You can really see the evolution and the problems people were facing and trying to solve. If inventors did this kind of far reaching research they would be so much better off! They would see what is out there and come up with all kinds of new ideas and inventions. Reading patents is a great way to stimulate creativity.

-Gene

I think not doing a search in the scenario you set forth is a really bad idea. One time I had a client who I did a patent search for, we found the invention and then he wanted me to write a falsified opinion and analysis so he could raise money. I declined that invitation and immediately disengaged.

Only good can come of doing a patent search if the client is really interested in getting a good patent and legitimately attracting serious investors. Dr. Gary Michelson, who is a Hall of Fame inventor, once told me that he wants the broadest patent claim possible that is going to be valid. He said point blank — why would I want a broad claim that is likely invalid? Serious inventors think that way. If your invention is going to make money there will be licensing opportunity and potentially a legal fight of one kind or another. A weak patent that is likely not valid isn’t wise. I choose not to do business with folks who are trying to pull one over on people.

Having said that, there can be times when no search is fine (in my opinion). If you are going to file only design patents I don’t think you likely need a search. The cost of the search is too high compared to the cost of the entire patent process for designs.

I’ve had clients tell me they are really only interested in the “patent pending” and if they can get something, no matter how narrow eventually, that is all they care about. In that case a search isn’t really necessary, but I always add the client’s desires/instructions into the engagement letter if I do accept this kind of representation.

The most common place where searches aren’t necessary is if you represent a serious company that innovates within a space they know well. If they know who the other competitors are and what they are working on and what is known in the industry, etc. etc. then a search probably isn’t necessary or helpful. What you will find is likely less than they can tell you themselves. Of course, independent inventors and small businesses and start-ups always think that is where they are and they “know” the industry. That is, of course, not true. You really need to be a player in the industry to know. If the client can’t tell you who the other companies are and what Universities may be working on something like this then they are not at the point where they can and should go without a search (in my humble opinion).

Cheers.

-Gene